There is a maze of information available online for new inventors, much of it very good and much of it highly questionable. Therefore, it is not surprising that each and every week I receive multiple general inquiries from newbie inventors. With that in mind, here is a list of the top 5 mistakes inventors make, followed by discussion of what you should do to move your project forward in an appropriate and responsible way.
1. Sold the InventionIn the United States you have 12 months from the time the invention was first sold within which to file either a provisional patent application or a non-provisional patent application. If you wait longer than 12 months then you have forever forfeited the right to obtain a patent in the US. Still, as mentioned above, in the new first to file era for U.S. patent law you should never sell your invention or offer your invention for sale without having first filed a patent application.
Even if you are aware of this rule and you do not sell or offer your invention for sale before you file a patent application there can still be traps that await you. For example, if you file a patent application that fails to adequately disclose your invention and then you start selling you may find out later that the application you filed did nothing to establish priority. That could mean you need to start over fresh with a new application done properly. The trouble now is that you have been selling the invention thinking you were safe, but then learn that the application you initially filed was so defective that it was as if you filed nothing.
2. Publicly used the invention
Public use of an invention can create the same problems as a sale or offer for sale. If you use an invention publicly you have 12 months from the first public use to apply for a patent. If you miss this 12 month window you will not be able to obtain a patent on that which you used publicly. Of course, if you want foreign rights you need to apply first before you use the invention publicly because in many countries there is no grace period of any kind. Remember also that the better advice is simply not to publicly use your invention before you file a patent application that adequately describes your invention.
3. Terrible provisional patent applications
A provisional patent application is a great tool when it is used properly, and devastating when it is not use properly. A provisional application is extremely easy to file because all you have to do is complete a cover sheet and then attach a description of your invention. There are no requirements that the description be in a particular format, and the truth is the Patent Office does not even look at the provisional application. This has lead to many non-lawyers and non-law firm vendors offering provisional patent application services for just a few hundred dollars.
Unfortunately for the unwitting inventor who uses a bargain basement, deep discount service provider, the law requires that a provisional patent application describe the invention with the same level of detail as is required of a nonprovisional patent application. This means that while you can easily get a provisional patent application on file and have a “patent pending” if you do not describe the invention with the level of detail and sophistication required by the patent laws your provisional application is worthless.
4. No professional patent search
I hear all the time from inventors who have done their own patent search and have found nothing similar to their invention. This is the first warning. With well over 9,000,000 US patents and counting, and many millions of published application that have never been patented, it is virtually impossible to do a patent search and not find something relevant. Patent searching is an art more than anything and if you are not intimately familiar with how the Patent Office classifies inventions and how attorneys characterize things then you would never find what you are looking for even if there is a patent out there that covers exactly what you invented.
5. No Internet search
There are any number of reasons why a product might be patented and not available for purchase. For example, independent inventors will many times obtain a patent and then not follow the project through, run out of money, lose interest or simply not succeed despite best efforts. Then when someone else has the same or similar idea/invention (which will ALWAYS happen) a search is done, the prior art is found and the decision is made that it isn’t worthwhile to commercialize if a patent cannot be obtained. There are many gadgets not on the market because no patent protection could be obtained because it was patented many years earlier.
A patent search is just that. A search of patents and published patent applications. You hire trained professionals to do a patent search, but the patent search does not typically include a product search online. That is the responsibility of the inventor. So for goodness sakes, if you come up with an invention the very first thing you should do is see whether it exists and can be purchased online or in stores.
